Supreme Court Creates Encouraging Test For Copyright Protection Of Designs Incorporated Into Useful Items

The Supreme Court resolved “widespread disagreement” about the availability of copyright protection for designs used on useful items. Star Athletica, LLC v. Varsity Brands, Inc., ___ U.S. ___ (Mar. 22, 2017). The question presented was how to determine when design works are “conceptually separable” from useful items, the latter not being eligible for copyright protection. The Supreme Court’s holding that copyright protection is indeed available for some designs incorporated into useful items is encouraging for creators seeking protection of their original works.

The decision sets out a two-part test. First, the design work to be protected must “be perceived as a two- or three-dimensional work of art separate from the useful article.” Second, such work of art must qualify for copyright protection on its own, when “imagined separately from the useful article into which it is incorporated.” The Court found that the cheerleading uniform designs at issue satisfy the new test, and affirmed the decision of the Sixth Circuit Court of Appeals. The Court’s test, however, does not allow a creator “to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear.”

Copyright registration to protect designs on useful products should now be relevant not just in the clothing industry, but in all fields. Timely copyright registration can confer strong benefits such as the availability of statutory damages and the recovery of attorneys’ fees. Thus, consideration should be given to these issues, in consultation with IP counsel, starting at the earliest design phases.